Appeal No. 2005-1278 Page 8
Application No. 10/145,226
Inc. v. Wahl, 724 F.2d 932, 939-40, 220 USPQ 481, 487 (Fed. Cir. 1983)
(noting that, while theoretically possible, "[d]ouble patenting is rare in the context
of utility versus design patents"); In re Thorington, 418 F.2d 528, 536-37, 163
USPQ 644, 650 (CCPA 1969) (Double patenting between a design and utility
patent is possible "if the features producing the novel aesthetic effect of a design
patent or application are the same as those recited in the claims of a utility patent
or application as producing a novel structure."); In re Phelan, 205 F.2d 183, 98
USPQ 156 (CCPA 1953); In re Barber, 81 F.2d 231, 28 USPQ 187 (CCPA 1936);
In re Hargraves, 53 F.2d 900, 11 USPQ 240 (CCPA 1931). In these cases, a
"two-way" test is applicable. See Carman, 724 F.2d at 940, 220 USPQ at 487.
Under this test, the obviousness-type double patenting rejection is appropriate
only if the claims of the two patents cross-read, meaning that "the test is whether
the subject matter of the claims of the patent sought to be invalidated would
have been obvious from the subject matter of the claims of the other patent, and
vice versa." Id., 220 USPQ at 487. See also Braat, 937 F.2d at 593, 19
USPQ2d at 1292 (explaining two-way test).
For the reasons set forth above, the decision of the examiner to reject claims 12
to 31 under the judicially created doctrine of double patenting over claims 1-22 of
Overholt '388, over claims 1-21 of Overholt '054 and over figures 1-6 of Overholt '392 is
reversed and the decision of the examiner to provisionally reject claims 12 to 31 under
the judicially created doctrine of double patenting over claims 1-19 of copending U.S.
Patent Application No. 10/163,004 is reversed.
The indefiniteness rejection
We will sustain the rejection of claims 26 and 27 under 35 U.S.C. § 112, second
paragraph, but not the rejection of claims 16 and 17.
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